What is an Opposition Proceeding?
As a brand owner, you might discover that one of your competitors filed an application with the USPTO for a trademark that is confusingly similar to one or more of your trademarks. If you time things correctly, you might be able to oppose the application before it successfully registers. The mechanism for formally challenging a pending trademark is to initiate an opposition proceeding.
· What is an opposition?
An opposition is a proceeding in which the plaintiff (i.e., opposer) seeks to prevent the issuance of a registration. "Any person who believes that he would be damaged by the registration of a mark" may file an opposition thereto, but the opposition may be filed only as a timely response to the publication of the mark, in the Official Gazette of the USPTO. The opposition takes place at the USPTO before its Trademark Trial and Appeal Board (TTAB). The TTAB is an administrative tribunal that determines the right to register. The TTAB is not authorized to determine the right to use, nor may it decide broader questions of infringement or unfair competition. The TTAB is unable to award monetary relief, including attorney’s fees.
These limitations on the TTAB do not mean that opposition proceedings are necessarily simple or uninvolved. While many oppositions are resolved shortly after they are initiated, some oppositions last for several months or years.
· Why oppose a pending application?
There are several reasons to oppose a pending trademark application. First, it is easier to challenge a competitor’s use of a confusingly similar name or other mark during the application process, both practically and legally. A competitor who recently adopted the trademark or intends to use the trademark is more likely to stop using the mark or agree to restrictions on use than a competitor who has used the mark for many years.
Legally, you could be prohibited from canceling an existing registration under certain grounds f you wait five or more years.
There might be other motivations to oppose an application. Perhaps you filed a trademark application and the other application was cited against your application on the basis that your application is likely to create confusion. In that situation, you might contact the owner of the other application, alternatively or in addition to opposing the application, in order to reach a consent or coexistence agreement.
In some instances, a competitor might attempt to claim trademark rights in a generic or descriptive term that might preclude you from using that term to identify or describe your goods and services.
· How do you oppose?
After a trademark examining attorney allows a trademark application, it publishes for a period of thirty days. During those thirty days, you and the rest of the world have the opportunity to oppose that application. Alternatively, you can request an extension of time to oppose the application. For example, you might identify the application on day 29 or 30 but are unable to oppose the application in time—or you might wish to investigate further, etc.—you can file the relatively simple extension of time. If you do not timely oppose the application, it will register a few months later (unless the application was filed on an intent-to-use basis and the applicant fails to timely submit specimens of use). Assuming that the application successfully registers, you can petition to cancel the registration (a topic that will be discussed in a future blog post). However, certain grounds for cancellation extinguish after five years of registration.
As noted above, the opposition takes place at the TTAB. It starts by filing a document titled “Notice of Opposition” with the TTAB. It will identify the relevant application(s), the owner of the application(s), and the opposing party(s). The notice will set forth the ground(s) for opposition and relevant facts. The applicant will have several weeks to respond. At this point, the opposition will resemble a federal lawsuit. We will discuss opposition procedures in future posts.
While on the topic of federal lawsuits, a party can seek cancellation of an existing registration at the TTAB and/or federal court. By contrast, a party can oppose a pending application only at the TTAB (there are limited exceptions). But see Bd. of Regents of the Univ. of Tex. Sys. v. Reynolds, No. 1:18-CV-182-RP-ML, 2019 U.S. Dist. LEXIS 177659, at *12-13 (W.D. Tex. July 31, 2019).
Available grounds for opposition include, but are not limited to:
(1) That applicant’s mark so resembles a mark registered at the USPTO as to be likely, when used on or in connection with the goods or services of the defendant, to cause confusion, or to cause mistake, or to deceive.
(2) That applicant’s mark is merely descriptive or deceptively misdescriptive of the applicant’s goods/services. Similar grounds exist if the applicant’s mark is primarily geographically descriptive or primarily geographically deceptively misdescriptive of the goods/services, or the applicant’s mark is primarily merely a surname; or that applicant’s mark comprises any matter that, as a whole, is functional.
(3) That there was no bona fide use of applicant’s mark in commerce prior to the filing of the use-based application for its registration under Trademark Act § 1(a) or for a Trademark Act § 1(b) application (i.e., intent-to-use), within the expiration of the time for filing a statement of use.
(4) That applicant did not have a bona fide intent to use the mark in connection with the identified goods/services as of the filing date of the application under Trademark Act § 1(b) (i.e., intent-to-use).
(5) That applicant is not (and was not, at the time of the filing of its application for registration) the rightful owner of the registered mark.
(6) That applicant’s mark, consisting of a particular color combination applied to its goods, is ornamental and has not become distinctive as an indication of the source of applicant’s goods.
(7) That applicant’s mark, consisting of a particular sound applied to its goods, is not inherently distinctive and has not acquired distinctiveness.
(8) That applicant’s mark, consisting of trade dress, product design or packaging, is not inherently distinctive and has not acquired distinctiveness.
(9) That applicant’s mark has been abandoned due to nonuse with intent not to resume use, and nonuse for three consecutive years shall be prima facie evidence of abandonment; or due to a course of conduct that has caused the mark to lose significance as an indication of source.
(10) That applicant’s product design is generic.
(11) That applicant’s mark would dilute the distinctive quality of opposer’s famous mark.
(12) That applicant committed fraud in the procurement of its registration or during the prosecution of its application for registration.
Trademark Manual of Examining Procedure § 309.03(c)(1).
· Summary
As a brand owner, you have a duty to police your marks against infringing use. Trademark oppositions are one tool that you should be aware of. Because trademark oppositions resemble federal litigation, it would benefit you to discuss any opposition you are considering with a trademark practitioner.
